DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed on October 27, 2025 cancelled no claims. Claims 1, 5, 21, and 32-33 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33.
Claim Objections
Claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are objected to because of the following informalities: Independent claims 1, 32, and 33 have been amended to recite: “rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play”. The phrase “while the video continues to play” lacks proper antecedent basis because the claim never previously recited playing the video. The examiner believes the term “rendering” is intended to be synonymous with “playing” and that the changing of claim terms was just an oversite. Thus, the issue has been raised as merely an objection to the phrase rather than a 35 USC 112(b) issue. However, the antecedent basis issue must be corrected nonetheless.
Dependent claims 2-6, 8-12, 14-21, 23-26, and 30 inherit the deficiencies of the claim from which they depend and fail to correct said deficiencies. As such, claims 2-6, 8-12, 14-21, 23-26, and 30 are objected to by virtue of dependency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 32, and 33 have been amended to recite: rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play. The examiner has been unable to find support for this limitation in the applicant’s specification. The applicant’s disclosure has support for rendering the short-form video within the frame widget based on a user action, wherein the video can include products and overlays in at least paragraphs 11, 27-28, 31, 40-41, 45, 53-55, and 60-61. However, based on the applicant’s disclosure, in at least paragraphs 11, 27-28, 31, 40-41, 45, 53-55, and 60-61, the video must be playing for the products and/or overlays to be displayed and the user must perform an action on the product and/or overlay for an in-frame shopping environment to be displayed. While paragraphs 11, 27-28, 31, 40-41, 45, 53-55, and 60-61 support a rendered video automatically playing when it comes into the users view on the webpage, it would appear the user must perform an action on the video for the in-frame shopping overlay to appear. As such, the applicant’s specification does not support the rendering includes “displaying an in-frame shopping environment as an overlay while the video continues to play” because the user must perform some type of action on the playing video for the in-frame shopping environment to appear. Thus, it is clear that independent claims 1, 32, and 33 have been amended to recite subject matter not found in the applicant’s disclosure. As such, claims 1, 32, and 33, as currently amended, fail to comply with the written description requirement.
Dependent claims 2-6, 8-12, 14-21, 23-26, and 30 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 32, and 33 have been amended to recite: rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play. The limitation “wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play” appears to be an attempt to impose some functionality on the rendering. However, it is impossible for one of ordinary skill in the art to determine which element of the claim is intended to have the intended functionality. Does the applicant intend for the video itself to be programmed to display an in-frame shopping environment when a user interacts with the video while it plays? This, though no definitively stated, might be the applicant’s intended invention based on at least paragraphs 31 and 40 of the applicant’s specification. However, according to the claims the short-form video is merely chosen from a library of short-form videos. The claimed invention does not make any modifications to the video which would cause it to display an in-frame shopping environment. Since the claim merely chooses the short-form video, inserts a frame widget into a webpage, and populates the video so that it can be rendered when a user performs an action, the ability for the video to display an in-frame shopping environment would appear to be outside the scope of the applicant’s invention which merely chooses, populates, and plays the video. Perhaps, the applicant intends for the frame widget which is inserted into the web page to be programmed to perform the claimed functionality? This, though not definitively stated, might be the applicant’s intended invention based on at least paragraphs 31 and 40 of the applicant’s specification appears. However, the applicant’s claim merely inserts the frame widget into a web page. There is no indication in the claim that requires the invention to program the widget to perform an action, or where the frame widget came from. Thus, the claim is broad enough to encompass merely obtaining the frame widget from a database or some other third-party. As such, it does not appear that the functionality of the frame widget it within the scope of the applicant’s claim. Perhaps, the applicant intends for the playing of the video based on the user action to have this functionality? The act of “rendering” is certain within the scope of the claim. However, as indicated in the Claim Objection section above, rendering merely means playing. If rendering is merely playing the video, then the video itself must be programmed to display the in-frame shopping environment as discussed above. Perhaps the applicant intends the functionality to be linked to the received user action instead of the actual playing? If so, it would need to be: a functionality programmed into the frame widget as discussed above; a functionality programmed into the webpage itself; or a functionality of a server or other computer that receives an indication of the user action from the website or frame widget. Does the applicant intend the frame widget, the webpage, or the server to perform this function? If so, the examiner has been unable to find any disclosure in the applicant’s specification that positively states the frame widget, the webpage, or the server executing code to generate or obtain an in-frame shopping environment, populate the frame widget with the in-frame shopping environment and displaying the in-frame shopping environment as an overlay while the video continues to play. While there is support for the in-frame shopping environment being displayed as an overlay, there is not disclosure with regards to how the applicant’s invention actually performs this step. A careful review of the applicant’s disclosure yields no clues as to what element of the claimed invention is responsible for the functionality of the in-frame shopping environment. Based on the applicant’s specification the frame widget itself may be programed to include a short-form video carousel, a short-form video story block, a grid, or a floating short-form video player. The frame widget can be programed to blurred, obscured, tinted, overlayed, colored, other videos. It can be programed to display buttons, arrows, diagrams, lines, etc. that function to rotate, shift, move, etc. videos into focus for playing. It can have borders with different colors, widths, sizes, etc. It can have a scrolling function. However, there is no specific disclosure of the frame widget being programed to generate or obtain the in-frame shopping environment as an overlay. Likewise, there is no direct disclosure of the short-form video including programming instructions that generate, obtain or display an in-frame shopping environment as an overlay. The closest disclosure is that the short-form video can include overlays, and the indication the in-frame shopping environment can be an overlay. There is no disclosure of a server or other computer populating a frame widget with an in-frame shopping environment in response to receiving a user interaction. There is no disclosure of the webpage populating a frame widget with an in-frame shopping environment. As such, it is impossible to tell what elements of the claimed invention is intended to have the claimed functionality. An invention in which the video includes code for populating the in-frame shopping environment is a different invention than one in which the frame widget includes code for populating the in-frame shopping environment. Likewise, a server performing such a task is a different invention than an invention that requires this task to be performed by the video or frame widget. All of which are a different invention in which the webpage performs the task. As each possible interpretation, results in a different invention, the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Dependent claims 2-6, 8-12, 14-21, 23-26, and 30 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
Claims 17-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 17 depends from claim 1 and recites “an in-frame shopping environment. Claims 18-21 depend from claim 17 and each recite “where the shopping environment”. However, claim 1, as currently amended recites “an in-frame shopping environment”. As such, it is impossible for one of ordinary skill in the art to determine whether the applicant intends for the claimed “an in-frame shopping environment” of claim 17 to be a new in-frame shopping environment that is different from the in-frame shopping environment of claim 1 or whether claim 17 was intended to have a status identifier of Currently Amended and the previously recited “an in-frame shopping environment” amended to recite “the in-frame shopping environment”. Given, the current status identifier of Original, the examiner would expect the intend of claim 17 is that it refer to a new and different in-frame shopping environment. However, the applicant’s disclosure does not support a video that can be used to render two different in-frame shopping environments. Additionally, the phrase “the shopping environment” found in claims 18-21 lacks proper antecedent basis. As currently amended the phrase “the shopping environment” could have antecedent basis to the claimed “an in-frame shopping environment” of claim 1 or antecedent basis to the claimed “an in-frame shopping environment” of claim 17. It would be impossible for one of ordinary skill in the art which “in-frame shopping environment” the applicant intends each of the claimed “the shopping environment” to have antecedent basis to. As such, claims 17-21 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are directed to a method, a computer program product, and a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 32, and 33 recite(s) the following abstract idea: (Examiner’s note: the short-form video and its functionality, as well as, the frame widget and its functionality are outside the scope of the claimed invention and, as such, have been included as part of the abstract idea itself because they cannot be considered “additional elements” of the claimed invention.)
accessing a library of short-form videos;
evaluating a webpage for products displayed or represented through the webpage within an online retail environment, wherein evaluating the webpage includes detecting and evaluating keywords, wherein the detecting of keywords includes performing a semantic analysis on the webpage to discover semantically related terms;
identifying, based on the evaluating, one or more products on the webpage;
choosing, based on the identifying, at least one short-form video from the library of short-form videos to include with the webpage;
inserting a frame widget into the webpage, wherein placement of the frame widget in the webpage is based on the evaluating;
populating the frame widget with the at least one short-form video that was chosen along with other videos; and
rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing, or sales related activities or behaviors. Accordingly, the claim recites an abstract idea (i.e., “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of: one or more processors attached to a memory which stores instructions executed by the processor, wherein the instructions include a machine learning model for performing latent semantic indexing (general-purpose computer with generic computer component executing software).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
accessing a library of short-form videos (transmitting and/or receiving data);
populating the frame widget with the at least one short-form video that was chosen along with other videos (transmitting and/or displaying data); and
rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play (transmitting and/or displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e., “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using one or more processors attached to a memory which stores instructions executed by the processor, wherein the instructions include a machine learning model for performing latent semantic indexing to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computers and/or one or more generic computer components (as evidenced from Figure 10 and paragraph 63 and 68-75 of the applicant’s specification; Wei et al., LDA-Based Document Models for Ad-hoc Retrieval, August 2006, https://dl.acm.org/doi/pdf/ 10.1145/1148170.1148204, page 1-9 which discloses on page 2, column 2, lines 2-3 that Latent Semantic Indexing was well-known by at least August of 2006; and the Recentive Analytics Decision which discloses that generic machine learning models are merely software executing on a computer which is insufficient of transforming an abstract idea into a practical application under Step 2a, Prong 2 and insufficient to be considered significantly more under Step 2b); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
accessing a library of short-form videos (transmitting and/or receiving data);
populating the frame widget with the at least one short-form video that was chosen along with other videos (transmitting and/or displaying data); and
rendering a video from the frame widget, based on a user action, wherein the video is from the at least one short-form video that was chosen, and wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to play (transmitting and/or displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 2-6, 8-12, 14-21, 23-26, 30, appear to merely further limit the abstract idea by further limiting the choosing of the at least one short-form video from the library which is considered part of the abstract idea (Claims 2-3); further limiting the short-form videos which is considered part of the abstract idea (Claim 4); further limiting the evaluating the webpage which is considered part of the abstract idea (Claims 5-6); further limiting the populating by adding an additional step of performing auctioning which is considered part of the abstract idea (Claims 8-11); further limiting the populating which is considered part of the abstract idea (Claim 12); further limiting the rendering of the video which is considered part of the abstract idea (Claims 14-15 and 17-21); further limiting frame widget which is considered part of the abstract idea (Claims 16 and 30); adding an additional step of enabling a virtual purchase cart; enabling selection of a product to add to the cart; and displaying the product which are all considered part of the abstract idea (Claims 23-25); adding an additional step of identifying the user which is considered part of the abstract idea (Claim 26), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the Claim Objections, the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, and the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Biniak et al.: 2008/0082922; Jones et al.: 2018/0025405; Henkin et al.: 2010/0138452; and Taylor et al.: 10/021458) that discloses a computer-implemented method, a computer program product and a computer system for video manipulation comprising:
a server with one or more processors and a memory executing instructions to perform the steps of:
accessing a library of short-form videos;
evaluating a webpage for products displayed or represented through the webpage within an online retail environment;
identifying, based on the evaluating, one or more products on the webpage, wherein evaluating the webpage includes detecting and evaluating keywords, wherein the detecting of keywords includes performing Latent Semantic Indexing (LSI) on the webpage;
choosing, based on the identifying, at least one short-form video from the library of short-form videos to include with the webpage;
generating a frame widget programmed to: play the at least one short-form video in response to a user interaction and display overlays on the at least one short-form video while the at least one short-form video is playing;
inserting the frame widget into the webpage, wherein placement of the frame widget in the webpage is based on the evaluating;
populating the frame widget with the at least one short-form video that was chosen along with other videos; and
receiving, by the frame widget, a first user action, wherein the first user action is an indication to render (play) the at least one short-form video;
rendering (playing), by the frame widget, the at least one short-form video in response to receiving the first user action;
displaying, by the frame widget, an overlay of a product on the video being rendered (played), wherein the overlay is selectable by the user;
receiving, by the server and from the frame widget, a second user action, wherein the second user action is a selection of the overlay;
transmitting, by the server and to the frame widget an in-frame shopping environment overlay;
displaying, by the frame widget, the in-frame shopping environment overlay while the video continues to be rendered (played).
In the invention of Biniak, Jones, Henkin, and Taylor the frame widget receives the initial overlays from the server and plays them in response to the first user action. Upon receipt of the second user action, the server transmits the in-frame shopping environment overlay to the frame widget, and the frame widget displays the in-frame shopping environment overlay on the short-form video while the video continues to be rendered.
Thus, the prior art of Biniak, Jones, Henkin, and Taylor does not disclose: the initial rendering (playing) of the video based on the initial user action includes displaying an in-frame shopping environment as an overlay while the video continues to play as currently claimed. (Examiner’s note: The applicant’s specification makes a distinction between a call-to-action overlay (e.g., product overlay, coupon overlay, etc.,) and an in-frame shopping environment overlay, in that an in-frame shopping environment overlay is only displayed after a user interaction occurs on a call-to-action overlay. Thus, the call-to-action overlay cannot be interpreted as an in-frame shopping environment.).
It would not have been obvious, to one of ordinary skill in the art, to modify the invention Biniak, Jones, Henkin, and Taylor with an additional prior art that discloses the missing limitation without the use of impermissible hindsight by using the applicant’s claim as a roadmap.
Thus, claims 1-6, 8-12, 14-21, 23-26, 30, and 32-33 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the Claim Objections, the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, and the 35 USC 101 rejections identified above.
Response to Arguments
Applicant's arguments filed October 27, 2025 have been fully considered but they are not persuasive.
The applicant’s argument with regards to the 35 USC 103 rejections are moot as the claim amendment has overcome the prior art of record.
The applicant’s arguments with regards to the 35 USC 101 rejection are not convincing.
The applicant argues that by adding the limitations of “wherein evaluating the webpage includes detecting and evaluating keywords, wherein the detecting of keywords includes performing Latent Semantic Indexing (LSI) on the webpage” and “wherein rendering the video includes displaying an in-frame shopping environment as an overlay while the video continues to playing” to the claims results in a specific implementation of an in-frame shopping environment rendered as an overlay while the video continues to play and, as such, overcome the 35 USC 101 rejection. This appears to be an argument that the claims as amended overcome the 35 USC 101 rejection under Step 2a, Prong 2, or perhaps an argument that it overcome the rejection under Step 2b. The examiner disagrees. In order to overcome a 35 USC 101 rejection under Step 2a, Prong 2 it is the “additional elements” of the claim that must transform an abstract idea into a practical application. In order to overcome a 35 USC 101 rejection under Step 2b it is the “additional elements” of the claim that must be considered “significantly more” than the abstract idea. “Additional elements” are defined as those elements outside the abstract idea itself. The claims, as currently amended, could perhaps be construed to introduce a new “additional element” of executing software to perform Latent Semantic Indexing (LSI). Latent Semantic Indexing (LSI), if construed as a Latent Semantic Indexing Natural Language Processing (LSI NLP) machine learning model rather than a mathematical model would be a new “additional element”. However, if LSI is construed to be a mathematical model it would be part of the abstract idea itself and, as such, would not be an “additional element”. For the sake of prosecuting the case, the examiner has considered Latent Semantic Indexing (LSI), as a Latent Semantic Indexing Natural Language Processing (LSI NLP) machine learning model. As such, the claimed LSI has been considered as an “additional element” of the claim under Step 2a, Prong 2 and Step 2b. Every other argued limitation is part of the abstract idea itself and, as such, is incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2 and insufficient to be considered significantly more than the abstract idea under Step 2b. As indicated in the 35 USC 101 rejection LSI is merely software executing on a computer performing generic machine learning which is insufficient to be considered a practical application under Step 2a, Prong 2 (see the Recentive Analytics decision). Likewise, as indicate in the 35 USC 101 rejection the applicant did not invent LSI as it was well-known before the filing date of the application proof of which has been provided in the Wei et al. reference. As such, each of the “additional elements” of the claim are well-understood, routine, and conventional. Thus, the “additional elements” of the claim cannot be considered “significantly more” than the abstract idea under Step 2b. Thus, the rejections have been maintained.
The examiner suggests, assuming support can be found in the applicant’s specification, amending the claim to recite that it comprises a specific graphical user interface with specific functionality. As currently claimed, the video and its functionality, the frame widget and its functionality, and the in-frame shopping environment and its functionality are all outside the scope of the computer performing the claimed steps. The claim is broad enough to be a computer obtaining a short-form video that is already programmed to perform its functions, obtaining a frame widget that is already programmed to perform its functions, and obtaining an in-frame shopping environment as an overlay that is already programmed to perform its functions. The claimed invention is merely required to access a library of the short-form videos video, evaluate a webpage, identify a product based on the analysis, chose a short-form video based on the identifying, insert the frame, populate the frame with the short-form video, and play the video when a user performs an action. As such, the video and its functionality, the frame widget and its functionality, and the in-frame shopping environment and its functionality are all outside the scope of the claimed computer performing the claimed steps. Thus, the video and its functionality, the frame widget and its functionality, and the in-frame shopping environment and its functionality cannot be considered an “additional element” of the claimed invention. However, amending the claims in a manner that brings these elements within the scope of the invention may result in the invention comprising a graphical user interface with specific functionality. Should the graphical user interface with the specific functionality be an improvement to graphical user interfaces, the claim could hypothetically overcome a 35 USC 101 rejection under Step 2a, Prong 2 and/or Step 2b in a manner similar to the claims of the CoreWireless decision.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Eddings et al. (8,407,665) which discloses customizing webpages based on an automated contextual understanding of the content of the Web page, profile-based information derived from personal data supplied by, or inferred from actions by, the user visiting the Website, location-targeted information (e.g., inferred by the Website visitor's current geography), etc.;
Locker et al. (2023/0031877) which discloses contextually analyzing a webpage, identifying images in the webpage and modifying the webpage to include a recommendation function;
Ramer et al. (2009/0234745) discloses perform auctioning when providing a ranked list of advertisement, wherein the auction bid is based on a position of the advertisement in the ranked list and based on a keyword on the webpage or relevance of the video to the webpage content, and wherein the auction bid is based on use of a coupon or other promotion;
Covert et al. (2013/0110613) discloses video advertisements which are video coupons that first describe at least one of a product or service offered and then displays a coupon as part of the trailing end portion of the video offering
Chow (2009/0259535) discloses a shopping environment with the ability for a user to clip coupons; and
Watanabe et al. (2019/0116181) discloses a website identifying a user using a hash value of a user identifier (e.g., identification tag).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3622